Kenneth E. Leeds
Dear sirs:
In response to the USPTO's call for comments concerning the
proposed ethics rules published at 68 FR 69442, I have the
following comments.
General Comments
The proposed rules are a bad idea for several reasons.
1. All areas of law tend to become unmanageably complex. The
wise legislator tries to minimize unwarranted complexity and
obfuscation. The mere fact that this proposal takes up 122
pages from the Federal Register suffices to show that it is a
bad idea.
2. Rules should not be enacted unless one seeks to solve an
existing problem. Much of this proposed legislation clearly
addresses problems that do not exist. Query: Regarding
proposed rule 11.806, in the entire history of the USPTO has
anyone ever forced an inventor to have sex in return for
patent legal services?
3. It seems that the USPTO has decided to enact the ABA
rules. The proposal states that "Forty-two of the bars have
adopted the Model Rules of Professional Conduct of the
American Bar Association or a modification thereof...." 68 FR
69442. The largest bar association is California's, and
California does not use the ABA rules. Rather than fostering
uniformity, attempting to cram the ABA rules down the throats
of practitioners in California will do nothing but create
uncertainty, confusion and conflict. The mere fact that
states with smaller bars use the ABA rules is irrelevant to
the problem of administering the patent bar. There are very
few patent lawyers in Mississippi, Wyoming and Alaska. Simply
making decisions based on numbers of states is the wrong way
of looking at the problem.
4. If one wants to minimize conflict and confusion, simply
require each patent attorney to follow the rules in the state
in which he/she practices.
5. I cannot emphasize strongly enough that I think the
proposed rules are an incredibly bad idea.
Specific Comments
1. Re rule 11.6, what is the status of one who has
voluntarily become inactive in the state bar but wishes to
continue handling patent matters before the USPTO? Is he now
a patent agent? Or does he continue on as a patent attorney?
2A. Re rule 11.12: Mandatory MCLE is unnecessary. Has the
USPTO done any studies re whether problems are arising due to
a lack of MCLE? I assume not. Further, maintaining and
monitoring an MCLE system requires creating a bureaucracy and
expense to address a non-existent problem. Attorneys are
already required to handle matters with competence. How they
go about doing so is their business. Whether they decide to
do so by reading materials on their own (vs. going to MCLE
classes) is not the USPTO's business.
2B. Again, re rule 11.12, my state (California) and most
other states already have an MCLE requirement. Why duplicate
an MCLE bureaucracy at the federal level? It is
wasteful--precisely the sort of thing that a Republican
administration (and every other governmental organization)
should eschew.
3. Rule 11.16 is unduly intrusive. If the Director wants to
look at my financial books, he can get a subpoena or a search
warrant. One John Ashcroft in the government is enough.
4. 11.303 and 11.106, and related rules leave open several
glaring questions that should be addressed. a) If one
discovers that his client wants to withhold information that
might be material under rule 56, is it permissible for him to
simply withdraw, or must one go ahead and disclose the
information to the USPTO even if one withdraws? b) After a
patent has issued, to what extent must one submit information
to the USPTO concerning incorrect information that was
submitted to the USPTO (see 11.303(a))? c) To what extent is
one obliged to disclose information to the USPTO discoverd
after one has withdrawn (again, see 11.303(a))? d) To what
extent is one obliged to disclose information learned from
one client to the USPTO during prosecution of a case for
another client? e) Is it still the rule that material art
discovered after withdrawl from the case or after the patent
issues need not be disclosed? If an attorney ceases
representing a client and thereafter discovers information
submitted to the USPTO was incorrect, that former client
would be most surprised to discover his former attorney is
still submitting information disclosure statements to the
USPTO. Is that really what the USPTO expects?
5. Fees for staying on the roster of patent attorneys: There
shouldn't be any. The USPTO proposes to create an
administrative burden for itself and then tax the patent bar.
I recommend simply not creating the administrative burden.
Respectfully submitted,
Kenneth E. Leeds
Reg. No. 30,566
Phone: 408-732-9500
FAX: 408-736-7052
P.O. Box 2819
Sunnyvale, CA 94087-0819
